Stay of proceedings at the UPC

The UPC Rules of Procedure (RoP) set out some circumstances when proceedings may be stayed. The first order at the Court of Appeal (UPC_CoA_22/2024) regarding granting of stays has been issued by the UPC.

Background

In the present case, the claimant simultaneously started a revocation action at the UPC and an opposition at the EPO. The defendant requested a stay of proceedings at the UPC, arguing that the opposition is wider in scope and territory than the revocation, and that two parallel procedures would be costly and procedurally inefficient.

The Paris Central Division evaluated the meaning of a ‘rapid decision’ as per rule 295(a) of the RoP which states

“The Court may stay proceedings:

(a) where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly;”

The Paris Central Division rejected the request for a stay of proceedings at the UPC because there was no ‘concrete proof’ that the opposition decision would not be issued within 1 year of lodging the revocation action at the UPC. The defendant appealed this decision.

In the appeal, the relative dates of oral proceedings were considered by the Court of Appeal. Even though the request for acceleration of EPO opposition had been granted, the oral hearing for the UPC was scheduled 4 months earlier than the EPO hearing. The opposition decision was not considered ‘rapid’, and therefore the Court decided not to stay the UPC proceedings.

The Court also rejected the defendant’s argument that unnecessary continuation of both parallel procedures could be avoided by staying the UPC proceedings. A long-term stay of proceedings would be needed to obtain a final, non-appealable, decision from the EPO proceedings. The appeal was rejected.

Summary

This case demonstrates the high bar which needs to be met to successfully stay proceedings at the UPC. Whilst earlier this year the EPO updated their guidelines so that opposition proceedings can be accelerated if there is a parallel infringement or revocation action the UPC, acceleration of EPO proceedings may not be enough to meet the requirement for a stay at the UPC. The case also highlights the UPC’s commitment to conducting proceedings efficiently with within 1 year.

Author:

Ela Kucharska

Technical Assistant

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